Thursday, July 30, 2015

TTAB Affirms Refusal of Deer Logo with "Phantom" Antlers, for Coffee, on Four Grounds

Bar NND Ranches sought registration of the mark shown immediately below, for "coffee; coffee based beverages; roasted coffee beans," but Examining Attorney Justin R. Jackson refused registration on four grounds: applicant sought to register more than one mark; the specimen of use did not show the mark as depicted in the application drawing; and the drawing and description of the mark were unacceptable. The Board affirmed all four refusals. In re Bar NND Ranches, LLC, Serial No. 77928601 (July 28, 2015) [not precedential].

Applicant Bar NND Ranch described the mark as follows: "The mark consists of a two dimensional fanciful deer design; the deer is holding a coffee mug which has the words “UNGULATTE”; the matter shown by the dashed lines in the drawing show placement of the mark; the matter shown by the dashed lines in the drawing is a “non-claimed” feature of the mark and serves to show the position of the mark." Applicant's specimen of use displayed the mark thusly:

Applicant explained that the antlers depicted on the deer are different depending on the strength of the coffee in the container. Antlers having more points or tips indicate stronger coffee. For decaffeinated coffee, applicant applies felt to the antlers.

Phantom element: The examining attorney contended that applicant was seeking to register more than one mark because the antlers, show in broken line on the application drawing, "constitute a changeable, phantom element of the marks." The Board noted that, under the Trademark Act, "a trademark application may only seek to register a single mark." A proposed mark that contains a changeable, or "phantom," element constitutes more than one mark.

Applicant argued that the antlers are not a "claimed element" and are not an "integral" part of the mark, and therefore the use of dashed lined for the antlers is proper and does not comprise a phantom element.

The Board noted that in both the application drawing and the specimen of use, that antlers are attached to the deer. It therefore found that the antlers "are integrated into the image of a deer holding a steaming mug of coffee."

Applicant’s stylized deer, with antlers of either size, constitutes a unitary composite mark conveying a single commercial impression that does not vary with the size of the antlers or the strength of Applicant’s coffee.

Applicant did not indicate that any antler configuration would be limited within a range of size, shape, or number of points. Thus this case is distinguishable from In re Dial-A-Mattress, where the phantom element was an area code, "the possibilities of which are limited by the offerings of the telephone company."

The Board therefore agreed with the examining attorney that the dashed lines in applicant's mark represent a phantom element, and it therefore affirmed the refusal to register on the ground that applicant was seeking to register more than one mark, in violation of Sections 1 and 45 of the Trademark Act.

The Board also found that the specimen of use "does not match and show use of the mark in the drawing, as required by Trademark Act Sections 1 and 45." [In other words, mutilation of the deer - ed.].

Twisting applicant's antlers even further, the Board affirmed two more refusals, finding applicant's drawing unacceptable under Section 1(a) and its description of the mark unacceptable under Trademark Rule 2.37. "These two refusals flow from the substantive issue that Applicant is seeking to register more than one mark in a single application."

TTABlog comment: Oh, deer. What if applicant had left the antlers off the drawing altogether? That would get rid of the phantom mark refusal. But the specimen wouldn't match the drawing.

I'm not convinced that applicant was trying to register more than one mark. It did not describe the mark as including antlers of various shapes. It was trying to register the deer without antlers. That, in my book, constitutes one mark.

5 Comments:

I agree with you, John; it is one mark. Under the circumstances, I'd provide a new drawing for and seek to register an "antlerless deer" mark -- perhaps using that depiction for the "decaf" coffee. I'd then use whatever size/color antlers I chose to depict the other various strengths of coffee and am guessing I'd be able to enforce my antlerless mark against other similar deer marks for related goods -- antlers or no antlers. Oh deer indeed!

One would think that filing several applications for the variations of the antlers that applicant offers would have required less doe than fawning over a single application and spending the bucks appealing this to the TTAB.

The likelihood of infringement is so low trademark registration is perhaps not worth the time and money -- especially since the design is copyrightable. Register the copyright and enforce nationwide against substantially similar designs.

My thought is that of the enforcement - how are competitors supposed to steer clear of infringement if anything goes?

What I don't get is why they don't just register four or five different marks for the different strengths? They obviously have money to spend, so why did they spend it at the TTAB and not on registrations?

It is a fluid mark. The applicant could have accomplished all it wanted by applying to register one common version of the mark. If a potential infringer begins using a confusingly similar mark with a different length of antlers, the registration would be adequate upon which to base an infringement claim.